Chapter 1800: Patent Cooperation Treaty
A Patent Cooperation Treaty (PCT) application enables a U.S. applicant to file one international application (known as the international phase) to the U.S. and have that international application acknowledged as a regularly nationally filed application (known as the national phase) in as many member PCT countries as he or she designates.
An international PCT application goes through the international phase initially. This includes:
- Sending in the application and having the Receiving Office process it.
- Establishing an International Search Report and Written Opinion (for applications filed on or after January 1, 2004) by one of the “International Search Authorities”.
- Publishing the international application along with the international search report.
- Establishing an international preliminary examination if desired.
Subsequently, the national phase will begin and the application is examined in the same manner as if it had been filed as a regular, nonprovisional application in each country designated in the international application.
*Note, you will see several very complex PCT exam questions when you take the Patent Bar exam. Make sure you pass the quizzes from this chapter. You may want to pass them multiple times as the more you learn on PCT, the easier the PCT exam questions will be.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
A PCT application enables the U.S. applicant the ability to file one international application in the U.S. and have that application acknowledged as a regularly national filed application in as many member countries (Contracting States) as he or she designates.
A PCT filing may replace regular filings in the designated country (i.e. a U.S. applicant may file a PCT application designating the U.S. in English, to the U.S. Receiving Office, and the application will eventually be prosecuted by the U.S.)
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A foreign applicant may file a PCT international application designating the U.S. in their home language in their home patent office and have that application acknowledged as a regular U.S. national filing.
The U.S. Receiving Office continues to accept applications only in English. As far as the U.S. is concerned, international publication is not required. Further reservations under the PCT taken by the U.S. are covered in this section.
An application may be filed to the U.S. Receiving Office only if one or more of the applicants is a resident or a national of the U.S. This section discusses further details on where to file an international application including mailing information.
Applicants of international applications may be represented by attorneys or agents who are registered by the PTO. Further details regarding agents or common representatives and powers of attorney are discussed in this section.
The acting attorney or agent may be revoked if necessary. The revocation must be signed by the person(s) who made the appointment or by their successors in title.
In addition, attorney or agents may withdraw from international applications. Each attorney or agent must sign the notice and the PTO usually requires 30 days notice.
In the international phase, an appointment of an agent may not be revoked by reference to a Customer Number.
This section covers the filing date requirements for gaining an international filing date. Essentially, an international filing date is accorded on the date which the international application was received by the receiving Office. It is possible to pay the application filing fees at a later date.
This section outlines the elements of an international application along with the main requirements.
All designations must be made in the international application at the time of its filing. No new designations may be added in later. However, an applicant may select preliminary designations. An applicant will have 15 months from the priority date to convert a preliminary designation to an active one, otherwise, the preliminary designation will be withdrawn.
In a continuation or continuation-in-part application, a specific reference to the parent application must be included in an application data sheet or in the first sentence of the specification.
Certain International Searching Authorities refund part or all of the international search fee or reduce the amount of the international search fee where the international search can be based wholly or partly on an earlier search.
The U.S. provides for reduced search fees where there is a corresponding prior U.S. national application, and the application is adequately identified in the international application or accompanying papers at the time of filing the international application.
This section covers the signature requirements of the applicant. An international application must be signed by the applicant, if there are two or more applicants, they (or all of their agents) must sign. Further details are discussed in this section.
Some fees may be refunded. For example, the search fee may be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the ISA.
This section discusses priority claims and priority document in an international application. For instance, a priority claim must indicate the country in or for which the earlier application was filed, the date on which it was filed, and the application number under which it was filed. The restoration of the right of priority along with the inventor's certificate are also covered.
A license for foreign filing is not required when filing an international application to a Receiving Office, but it may be required before the applicant or Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign country. The applicant should petition for a license for foreign filing if appropriate.
Applications under secrecy order will not be forwarded to the International Bureau until the secrecy order has been raised.
Correspondence will be sent to the applicant unless an agent has been appointed. The first mentioned agent is the one correspondence will be sent to. In addition, “Express Mail” may be used to file PCT applications or associated papers.
This section covers the rectification of obvious mistakes including the proper time limit and who much authorize the rectifications.
The International Searching Authority (ISA) takes the international application and it makes the international search, it prepares the international search report, and it prepares a written opinion for international applications filed on or after January 1, 2004. Further details of the ISA are outlined in this section.
This section covers the basic flow under the PCT including time limits when items are due. International applications under the PCT are usually filed within 12 months after the filing of the first application containing the same subject matter so that the priority date of the first application may be claimed.
The international search is a thorough, high quality search of the most relevant resources. This section covers details on the international search and instances where the subject matter need not be searched (these are usually instances of non patentable subject matter).
Applications containing nucleic and/or amino acid sequences must contain a listing of the sequence that complies with the laws and rules of sequence listings.
This section covers the unity of invention before the International Searching Authority. Essentially, any international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
This section covers PCT Article 19 and PCT Rule 46; both cover amendments under the PCT. Article 19 covers the amendments of claims before the International Bureau while Rule 46 covers the amendment of claims before the International Bureau.
The International Bureau must send a copy of the published international applications to each of the designated Offices that have requested to receive the published application on the day of publication. Further details on the effect of publication are covered in this section.
The applicant may withdraw the international application, the designation of any state, or a priority claim by a notice addressed to the International Bureau or to the Receiving Office as long as it is received before the expiration of 30 months from the priority date. Further details on the withdrawal of an international application, designations, or priority claims are addressed.
This section covers the demand and preparation for filing a demand for preliminary examination. A brief discussion of the basics of Chapter I and Chapter II are covered.
Applicants will have 1 month to pay deficient fees plus a late payment fee. There is no extension of this deadline.
Amendments must not add subject matter which goes beyond the disclosure of the international application as originally filed. This section discusses details of amendments by the applicant during international preliminary examination.
It usually benefits the applicant to have an international preliminary examination performed by the IPEA, exceptions include when the nature of the claimed subject matter relates to a subject that does not require an international preliminary examination or when the claims are so indefinite that no examination is possible.
This section covers details of the written opinion of the International Preliminary Examining Authority (IPEA) in international applications having an international filing date before, on or after January 1, 2004.
This section covers the International Preliminary Examination Report (IPER). It includes a brief discussion of what it should include and when it should be established.
Any withdrawal of the demand or any election must be sent to the International Bureau or the IPEA. These submissions must be signed by all applicants.
There are three types of U.S. national applications national stage applications under the PCT (those entering the national stage from an international application in compliance with PCT rules and laws), regular, domestic (nonprovisional) national applications, and provisional applications.
This section provides a detailed look at national stage applications. It includes a discussion on the commencement and entry, submissions required by 30-months, the correction of inventorship, and filing dates.
It is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency of an international application designating the U.S. without completing the requirements for entering the national stage. This section further discusses filing a continuation, divisional, or continuation-in-part application of a PCT application designating the U.S.
This section covers the differences between a national application and a national stage application. National applications are filed under 35 U.S.C. 111 while national stage applications are filed under 35 U.S.C. 371. This section discusses the filing dates, the reference dates under 35 U.S.C. 102(e), the unity of invention, and the priority requirements for both.
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